U.S. Court of Appeals for the Eleventh Circuit, MidlevelU, Inc. v. ACI Information Group, Docket No. 20-10856

 

Blogs

 

Search Engine

 

Web Crawlers

 

RSS Feed

 

Copyright Infringement

 

Implied License

 

Statutory Damages 17 U.S.C. § 504

 

Eleventh Circuit Pattern Jury Instructions (Civil Cases)

 

 

Appeal from the United States District Court for the Southern District of Florida.

 

This appeal involves a blog operator that sued a content aggregator for copyright infringement after the aggregator copied and published the blog’s content. A jury sided with the blog operator. The main issue for us is whether the district court should have allowed the jury to decide whether the aggregator had an implied license to copy and publish the blog’s content. Although the district court employed a too narrow understanding of an implied license, we conclude that a jury could not have reasonably inferred that the blog impliedly granted the aggregator a license to copy and publish its content.

 

MidlevelU makes the full text of its blog articles available in an RSS—or “really simple syndication”—feed. It has used the RSS feed since the blog’s inception to allow readers to easily read its articles. MidlevelU designed its blogging platform so that its RSS feed would distribute the full text of the blog instead of only headlines and summaries of recent articles. It also coded its website to instruct search engines that they may copy and archive every page on the site. MidlevelU included a copyright notice on its website and RSS feed, with a date range from 2012 to the present year, but it did not include a copyright notice for each article.

 

Through the RSS feeds, Newstex received new articles posted to the blogs. It ran the articles through software that generated summaries of the articles. The entries in the Index for these blog articles included bibliographic information about the author and the blog, the computer-generated summary of the article, and a link to the original post. Newstex also added a tab labeled “original” to each entry, available only to subscribers. It embedded an “iFrame” in that tab so that clicking on the tab opened a window showing the original, fully browsable web page, including the full-text content of each article—a “live snapshot”— within the Index website.

 

(…) In June 2018, MidlevelU sued Newstex for copyright infringement. In response, Newstex asserted copyright-registration invalidity, implied license, and fair use as affirmative defenses.

 

(…) A nonexclusive license to use copyrighted material “may be granted orally, or may even be implied from conduct.” Jacob Maxwell, Inc. v. Veeck, 110 F.3d 749, 752 (11th Cir. 1997) (internal quotation marks omitted); see 17 U.S.C. §§ 101, 204(a).

 

Latimer v. Roaring Toyz, Inc., 601 F.3d 1224, 1235 (11th Cir. 2010). In Latimer, we described one way to create an implied license. Id. We held that “an implied license is created when one party (1) creates a work at another person’s request; (2) delivers the work to that person; and (3) intends that the person copy and distribute the work.” Id.

 

Newstex argues, and we agree, that Latimer did not create an exclusive test. Latimer described the creation of an implied license in a work-for-hire relationship without addressing whether or how an implied license might be created in other contexts. We have never held that the Latimer test provides the only avenue for proving that a copyright holder granted an implied license to an alleged infringer. And leading copyright authorities condemn “transmuting the three Latimer factors into the only applicable test.” 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 10.03[A][7] & n.69.6a (rev. ed. 2018); accord 2 William F. Patry, Patry on Copyright § 5:131 (2007).

 

(…) Creating material at another’s request is not the essence of a license; an owner’s grant of permission to use the material is.

 

A license is “a permission . . . to commit some act that would otherwise be unlawful.” License, Black’s Law Dictionary (11th ed. 2019); see Robert W. Gomulkiewicz et al., Licensing Intellectual Property: Law and Application 4 (2d ed. 2011) (“A ‘license’ is a grant of permission.”).

 

When an owner’s conduct “clearly” manifests “a consent to . . . use” of copyrighted material, the owner impliedly grants a nonexclusive license. De Forest Radio Tel. Co. v. United States, 273 U.S. 236, 241 (1927); see also License, 2 Bouvier’s Law Dictionary (14th ed. 1874) (“An implied license is one which is presumed to have been given from the acts of the party authorized to give it.”). A nonexclusive license is a “mere waiver of the right to sue” for infringement. De Forest, 273 U.S. at 242 (internal quotation marks omitted); see also Jacob Maxwell, 110 F.3d at 753.

 

Courts have recognized permission to use copyrighted material in web-based contexts vastly different from the facts in Latimer. Field v. Google Inc., 412 F. Supp. 2d 1106, 1116 (D. Nev. 2006); accord Parker v. Yahoo!, Inc., No. 07-2757, 2008 WL 4410095, at *3–4 (E.D. Pa. Sept. 25, 2008). In Field, a website owner sued Google for posting archived copies of the site’s pages, which included copyrighted content. Field, 412 F. Supp. 2d at 1109–10. Google presented evidence that it is well known within the Internet industry that websites can be coded to tell search-engine web crawlers—automated programs that “crawl” the web to locate, copy, and archive webpages for a search-engine index—not to copy their webpages or display archived copies of the webpages on the search-engine index. Id. at 1110, 1112–13. Absent this affirmative instruction, a search engine like Google infers permission to copy and archive the webpages. Id. at 1116. Yet the plaintiff had coded his website to allow web crawlers to copy and archive all its pages, and even admitted that he knew about Google’s practices. Id. at 1113–14. Because Google could reasonably interpret the plaintiff’s conduct as the grant of a license for this use, Google succeeded on its implied-license defense. Id. at 1116.

 

Field recognized an industry practice where search engines using web crawlers construe permission to use material in a limited way and for a particular purpose.

 

(…) Monika Isia Jasiewicz, Comment, Copyright Protection in an Opt-Out World: Implied License Doctrine and News Aggregators, 122 Yale L.J. 837, 846 (2012) (explaining that because “an opt-out scheme for gaining copyright holders’ permission online represents a significant departure from the traditional framework of American copyright law, . . . . some courts have been hesitant to extend Field’s reach beyond the narrow search engine context”).

 

(…) Implied permission to enter through a front door (web crawler) does not also imply permission to enter through a back window (RSS feed).

 

(…) Newstex failed to present evidence that would have allowed the jury to infer that MidlevelU granted an implied license to copy and publish the content of its blog.

 

(…) MidlevelU elected to pursue statutory damages. 17 U.S.C. § 504.

 

The district court gave the jury our pattern instruction, which lists several factors for a jury to consider in determining the appropriate amount of statutory damages to award: “the profits the defendant earned because of the infringement; the revenues that the plaintiff lost because of the infringement; the difficulty of proving the plaintiff’s actual damages; the circumstances of the infringement; whether the defendant intentionally infringed the plaintiff’s copyright; and deterrence of future infringement.” Eleventh Circuit Pattern Jury Instructions (Civil Cases) § 9.32 (2013).

 

The completed verdict form also confirms that the jury understood it could award damages for only the registered works. The jury awarded damages for 27 infringed articles. It awarded $7,500 per article—well within the available range of $750 to $150,000 per willfully infringed work. See 17 U.S.C. § 504(c)(1)–(2).

 

Newstex makes no argument that multiplying the bottom of the range by a factor of 10 is unreasonable for the added factor of willfulness.

 

(…) A “certificate of a registration made before or within five years after first publication of the work” constitutes “prima facie evidence of the validity of the copyright and of the facts stated in the certificate.” Id. § 410(c) (emphasis added). The date of publication is a “fact stated in the certificate.” Id.; see Gaste v. Kaiserman, 863 F.2d 1061, 1064 (2d Cir. 1988). And the dates listed in the certificates are presumed to be true. United Fabrics Int’l, Inc. v. C&J Wear, Inc., 630 F.3d 1255, 1258 (9th Cir. 2011).

 

 

Secondary authorities: Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 10.03[A][7] & n.69.6a (rev. ed. 2018); William F. Patry, Patry on Copyright § 5:131 (2007); Robert W. Gomulkiewicz et al., Licensing Intellectual Property: Law and Application 4 (2d ed. 2011).

 

 

 

(U.S. Court of Appeals for the Eleventh Circuit, March 3, 2021, MidlevelU, Inc. v. ACI Information Group, Docket No. 20-10856)